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Patentee cannot recapture claim scope disavowed during prosecution to prove infringement
March 24, 2008
In a decision Friday, the Federal Circuit affirmed a district court's claim construction and its concomitant grant of summary judgment of noninfringement, as well as its denial of attorney fees under § 285. The district court held the patentee had, during prosecution of the patent at issue, made a clear and unmistakable disavowal of claim scope, and as a result, under the doctrine of prosecution disclaimer, the accused devices could not fall within the scope of the claims. The district court also held that the case was not exceptional, and therefore attorney fees were not warranted.The Federal Circuit agreed with the district court, finding application of prosecution disclaimer appropriate, affirming the summary judgment of noninfringement. The court further agreed that the case was not exceptional, and therefore affirmed the denial of attorney fees to the defendants.More detail of Computer Docking Station Corp. v. Dell, Inc. after the jump.Computer Docking Station Corporation ("CDSC") owns a patent claiming a portable microprocessor system with sufficient processing power, memory, and network compatibility for business applications. The specification teaches that the main housing's size and weight account in part for the system's portability. The system also includes the capability to connect to peripheral devices, such as a keyboard or mouse. The main housing connects to these peripheral devices either through individual connectors (one connector per peripheral device), or through a docking connector. The specification explains that a keyboard and visual display are "options available with the system." During prosecution of the patent, the examiner rejected several claims as anticipated and obvious in view of the Herron patent. In successfully distinguishing Herron, CDSC expressly defined its invention in different terms and amended its claims. Specifically, the inventors made the following statements (emphases added):
The Applicants' system therefore provides an extremely powerful utility. A full-sized microprocessor with large memory capacity is made completely portable. The processing unit housing or "brick" can be easily removed from one system and transported in a briefcase to another system. Rather than requiring a portable display and keyboard, the present invention concentrates on portability of an exceptionally large memory capacity in hard disk drive. . . . For the same sized unit as a conventional lap-top computer, the invention does require that peripherals be made available at each location, a requirement that would lead one away from the present invention. However, even that requirement can be an advantage over laptop computers in that higher quality peripherals will more likely be used since they need not be transported. Thus, lap-top machines make concessions in memory, display and other areas in favor of portability. The Applicants' system, on the other hand, is a portable full service microprocessing system which concedes portability of peripherals.
CDSC sued several laptop computer manufacturers for infringement. Either the phrase "portable computer" or "portable computer microprocessing system" appears in the preamble of each asserted claim. The district court held these preamble phrases to be limiting, and construed them to mean "a computer without a built-in display or keyboard that is capable of being moved or carried about." The district court based this interpretation on the statements made during prosecution that emphasized the difference between its invention and laptop computers to overcome the examiner's rejections based on Herron. According to the district court, these statements amounted to a clear and unmistakable disavowal, and it therefore construed these terms to exclude computers with built-in displays or keyboards.Based on this construction, CDSC sought entry of final judgment of non-infringement, conceding that none of the accused products met the court's construction of this limitation. Defendants opposed the motion because the parties could not agree on the form of judgment for another limitation (the "all connections" limitation). The district court denied CDSC's motion and Defendants moved for summary judgment of non-infringement based on both limitations and for attorney fees and costs under § 285. The court granted summary judgment of noninfringement, but found the case not to be exceptional, and declined to award attorney fees. CDSC appealed. The Federal Circuit affirmed the district court's grant of summary judgment of noninfringement of the portable computer limitation, and its denial of defendants' request for attorney fees and costs under § 285. The Federal Circuit found that the "portable computer" terms at issue were limiting even though they appeared in the preamble, as they clearly recited a necessary and defining aspect of the invention, specifically its portability. The written description and CDSC's statements during prosecution emphasized the portability feature of the invention, yet the limitation didn't appear in the body of the claims. As a result, the terms "portable computer" and "portable computer microprocessing system" limited the scope of the asserted claims. The parties did not dispute that the limitation required a computer that is capable of being moved or carried about; therefore, the appeal focused on the "a built-in display or keyboard" component of the district court's construction. In reviewing the prosecution history, the Federal Circuit found several references to support that a "portable computer microprocessing system" meant a computer without a built-in display or keyboard that is capable of being moved or carried about. Most notably, the passage quoted above indicated that CDSC used the lack of integrated peripherals to distinguish its invention from the Herron patent. As a result, the Federal Circuit agreed with the district court that there had been a clear disavowal of claim scope, and affirmed the summary judgment of noninfringement.The Federal Circuit also agreed the case was not exceptional, and therefore affirmed the denial of attorney fees to the defendants. The court noted several factors relevant to a determination of whether a case is exceptional when a defendant prevails, including "the closeness of the question, pre-filing investigation and discussions with the defendant, and litigation behavior." Here, the court noted the extent of CDSC's prefiling investigation (including both a review of the accused products and the prosecution history of the patent), the fact that CDSC had tried to license the patent to the defendants before bringing suit, and the fact that CDSC had sent infringement charts to each defendant. As a result, given the circumstances, the district court's finding that the case was not exceptional was not clearly erroneous.To read the full decision in Computer Docking Station Corp. v. Dell, Inc., click here.
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